1. Introduction – The need for an Intellectual Property Rights (IPR) policy
The primary functions of the universities in Norway are education, research and dissemination for the public good. The University of Oslo (UiO), with its 2,500 academic employees, is a significant producer of knowledge and research, on both a national and an international scale. As part of its responsibilities to society, the University has a duty to take steps to ensure that society can make use of the research output generated through its activities. Furthermore, the task of dissemination encompasses various aspects of the application or publication of knowledge, intellectual property and research output.
Through both the Act relating to universities and university colleges and the Act relating to the right to employees' inventions (hereafter, the Employee Invention Act), the legislators have made it clear that as part of its responsibilities to the community, the University of Oslo has a duty to help to ensure that the University's research results can be exploited commercially. To this end, the University of Oslo requires a policy for handling intellectual property rights (IPR policy), based on a review of which output from the employees' activities are subject to intellectual property rights and in which cases the University ought to or must acquire these rights.
Acquisition of rights also confers a responsibility to ensure that the findings are used, with the costs that this entails. However, it is important to point out that the socio- economic gain from the commercial exploitation of the results of research will probably be greater and be realised sooner than a potential financial gain for the universities. Contributions of this nature will also serve to enhance the University's reputation and legitimacy in society.
Ideas, inventions and intellectual property created at the University or using the University's resources should be used primarily for the public good. By establishing a system whereby peer-reviewed scientific articles are submitted to the University's institutional repository, the University of Oslo wants to help make research output available to the public through an Open Access system, in accordance with the Norwegian Government's guidelines in Report no. 30 (2008-2009) to the Storting, Climate for research.
At the same time, the University and its employees may have a vested interest in ensuring the highest possible return, based on the employees' performance. If students are involved in research activities, it is also important that the IPR policy sets out clear constraints concerning ownership of students' research output and makes arrangements to ensure that this output too is managed properly and developed in a beneficial manner. Nevertheless, the University's IPR policy must be drawn up and enforced in such a way that the individual interests give way to the interests of society when the two are not compatible.
The research community has developed norms and values for how scientific results are obtained and disseminated. The University will protect and safeguard the academic staff's customary and statutory right to decide whether and in what way a scientific publication is to be published. Therefore, it is part of the University's IPR policy to provide positive incentives to the employees for commercial use of the results of their work when circumstances permit and for traditional dissemination and public use of ideas, findings and intellectual property (including teaching material) that has been produced at the University.
The University of Oslo has established a company, Inven2 AS, to manage exploitation of research results with commercial potential. Inven2 AS is wholly owned by the University of Oslo and Oslo University Hospital HF and administers the rights to inventions developed by the employees at these two institutions. Inven2 AS also assesses all reported research results and, on behalf of the University, acquires the rights to results where there is potential or a possibility for commercial exploitation. This means that, following an assessment of the results, the employees are ensured that the University will follow up the possibilities for commercial exploitation. If the University chooses not to take steps to secure copyright protection and exploit the findings, the employees must be entitled to have these rights reassigned to them. The principles for acquisition of intellectual property rights and any subsequent reassignment of these rights are determined in agreements with the employees.
Activities at the University are characterised by transparency and widespread collaboration with various partners in the private and public sectors. This concerns both external parties who benefit from the University staff's expertise and external partners who contribute toward or pay for services and activities at the University. Much of the research work at the University depends heavily on external funding. In many cases, University staff have two employers (additional positions). This transparency and exchange of expertise is important for both parties, but requires orderliness as regards the issue of intellectual property rights. The distribution of rights must be clarified beforehand in agreements between the institutions or parties.
The University's policy in the area of intellectual property rights has been based on the above principles and aims to balance the above needs.
2. What and who is subject to the IPR policy
2.1 General
The IPR policy applies to all employees at the University of Oslo (academic staff and
technical-administrative staff), people who conduct research in research projects where the University of Oslo is the executive or a participating institution or party (with any exceptions that arise from the provisions of the contract governing the collaboration) and people who have signed an agreement with the University of Oslo regarding execution of assignments. Section 2.2. below gives a more detailed description of the legal bases for the University of Oslo's acquisition of the results of these groups' work.
The University of Oslo's IPR policy covers inventions, intellectual property and other results of work. In this document "results" means tangible and intangible products and methods that have been discovered, invented, processed, refined or in any other way are connected to intellectual or manual work. An explanation of the various categories of results and their characteristics has been provided in Section 2.3 below.
2.2 Overview of legal bases for rights to results
Pursuant to the Employee Invention Act, the University of Oslo may demand that the right to inventions patentable in Norway be transferred from the employee to the University of Oslo. Nevertheless, lecturers and academic staff retain the right to publish the invention, unless otherwise agreed or a third party's rights prevent this. If, pursuant to this Act, the employer (the University of Oslo) asserts the right to an invention, the employee must facilitate transfer ("assignment") by signing an agreement and/or assignment declaration.
Under the Norwegian Copyright Act, the University of Oslo has rights to catalogues, databases, etc., the development of which the University of Oslo has invested in, and to software created by employees during performance of tasks assigned as part of their employment or according to the employer's instructions.
For results other than those mentioned above, the general rule is that the employee owns the results of their work, for example, articles or books that under the provisions of the Copyright Act the author owns the rights to. The situation is more complex for teaching materials, but the general rule is that the employee owns the rights to teaching material that has a clearly personal style. If the employer wants to acquire the rights to the results, this must be regulated in an agreement or contract. Both the Employee Invention Act and the Copyright Act may, with some exceptions, be supplemented through agreements.
The standard conditions of contract for projects funded by the Research Council of Norway and the EU go even farther than the law; these contracts state that all research results, and the rights connected to them, are the property of the University of Oslo.
In 2006, in connection with implementation of the IPR policy, a standard acquisition of rights agreement was drawn up for patentable and non-patentable inventions, databases, software and physical objects, which all new employees at the University of Oslo must sign on employment. In connection with the drafting of this agreement, the provisions were discussed with the employees' unions. Persons employed before 2006 were encouraged to sign the same agreement. As regards employees who participate in research projects funded by the Research Council of Norway or EU, it is a requirement that the acquisition of rights agreement has been accepted so that the University of Oslo can fulfil its contractual obligations.
2.3 Overview of results covered by the University of Oslo's IPR policy
The following categories of results or output are covered by the University of Oslo's IPR policy and are subject to a notification obligation. These are discussed in more detail in sections 2.3.1 to 2.3.5 below:
- Patentable inventions,
- Non-patentable inventions and other solutions, principles, know-how including e.g. trade secrets, technical, scientific and commercial information and business concepts, hereafter referred to as "non-patentable technology",
- Databases, which group together a large volume of data, or which are the result of a significant investment
- Any tangible product (organic, inorganic and biological matter), including substances, organisms and crops and also materials – hereafter referred to as physical objects,
- Software
These categories of results are all covered by the University of Oslo's IPR policy and may be acquired from the employees by virtue of their employment and in accordance with the employment contracts.
Inven2 AS must be notified of such inventions and copyrightable materials through a "Disclosure of Invention" (DOFI), so that the University of Oslo is able to consider ownership of the invention and as applicable acquisition of the rights to them. This does not mean that in each case the University of Oslo will demand assignment of the rights to all kinds of results. When notifying Inven2 AS of an invention, an employee may point out that he or she will exercise his or her right to publish the invention without awaiting the University of Oslo's assessments, but notification of the invention must be submitted anyway.
The following categories of results are covered by the University of Oslo's IPR policy, but are not subject to an obligation to notify Inven2 AS. These are discussed below in Sections 2.3.6 and 2.3.7:
- Scholarly articles
- Teaching materials
Through the employment contract, the University of Oslo has reserved a limited and non- exclusive right to use results in these categories. In the same way as the 2006 acquisition of rights agreement applied to both academic and technical-administrative staff (see Section 2.2 above), the University of Oslo's IPR policy regarding academic articles and teaching materials also applies to academic and technical-administrative staff alike. However, much of the work-related material that technical-administrative employees produce, as part of the University's role as a public authority, is not covered by copyright protection.
Significant institutional needs suggest that the University of Oslo reserves certain rights to use the employees' copyright-protected results through an agreement with the employee. Consideration of interests between the employee and the institution as regards copyright has been discussed in "Utredning om opphavsrett ved Universitetet i Oslo" (Report on copyright at the University of Oslo) presented in October 2009 by the committee set up by the Rector on 23 December 2005, known as the Sejersted II Committee. The committee's recommendations have provided guidelines for the University of Oslo's IPR policy in this field.
The above-mentioned categories are copyright-protected results. Under the Copyright Act, any person who creates such results shall have the copyright therein. This means that most of the academic employees' production, be it for teaching or research purposes, regardless of whether it is an article, lecture manuscript, PowerPoint presentation or digital learning tool, must be regarded as intellectual property. One conceivable exception is simple PowerPoint presentations, which in an unoriginal way repeat the main points of a particular problem area.
It is the works' form of creative expression2 that is protected, not the underlying thoughts, ideas, points of view, hypotheses, etc. In this way it will be possible to protect the work's linguistic expression, photographs and animations, etc., and the format and layout, and to some extent also choice of examples, etc. A mathematical formula, a historical source or interpretation of a source, a medical hypothesis or an interpretation of a regulation will have no copyright protection per se.
As only physical persons can create intellectual property, it will almost always, with a few exceptions, be the employee who is entitled to the copyright to results created as part of the University's activities.
2.3.1 Patentable inventions
A patent may be granted for inventions that have industrial application, which are new in relation to what was known before the filing date of the patent application, and which also differ essentially therefrom (have inventive step), cf. Section 1 (1) and Section 2 (1) of the Patents Act. If the statutory requirements are met, a patent may be obtained for any kind of invention, such as;
1) A product / substance patent (new product or substance),
2) Use patent (new use of known product or substance), or
3) Method patent (e.g. new method of producing a known substance).
Inventions may only be patented if the patent application has been submitted before the invention is made accessible to others. Therefore, the employee is obliged to refrain from making the invention accessible to others, orally or in writing, until after the University of Oslo, through Inven2 AS, has decided whether to acquire the rights and, if the invention is acquired, until the patent application has been filed. It is important that the invention is not made public until the patent application has been filed, as publication destroys the possibility of patenting.
Pursuant to the Employee Invention Act, the University of Oslo is entitled to acquire "inventions patentable in Norway" that come under the University of Oslo's sphere of activity. The duty to notify the employer about patentable inventions is defined in the Employee Invention Act and is specified in the agreements between the University of Oslo and the employees. Patentable inventions are reported to Inven2 AS in the form of a DOFI.
Pursuant to Section 6 of the Employee Invention Act, employees at the University of Oslo may nevertheless choose to publish their results rather than patenting. In such cases, at the time of notification, the employee must state explicitly that he or she will go ahead with publication regardless. Otherwise, manuscripts must not be offered for publication until a patent application has been filed, unless this has been approved beforehand by the University of Oslo through Inven2 AS. Once a patent application has been submitted, the employee is free to publish the invention, e.g., as a lecture or as part of a scholarly publication, as described in the patent application and in consultation with Inven2 AS.
2.3.2 Non-patentable technology
The Employee Invention Act does not apply to inventions only patentable under international law, e.g. the US Patents Act, nor to inventions that are not patentable. In these cases, the right to patent own inventions remains with the employee (cf. the wording "inventions patentable in Norway"), unless otherwise agreed or must be regarded as having been agreed, or unless the inventor wants to transfer the rights to the invention voluntarily.
However, the duty to notify Inven2 AS of inventions does apply in the same way to non- patentable technology as to patentable inventions, as it may be difficult to determine at an early stage whether an invention is patentable or not under Norwegian patent law. Furthermore, it may also be the case that a non-patentable invention may be commercialised through licence agreements, for example. This extended notification obligation is determined in annexes to the employment contracts between the University of Oslo and the employee.
The University of Oslo's right pursuant to the employment contract to acquire non- patentable inventions will be practised in the same way as the right to acquire patentable inventions.
2.3.3 Databases
Section 43 of the Copyright Act regulates the rights to databases and catalogues. "The party who produces a formula, catalogue, table, program, database or similar work, has the exclusive right to dispose of all or substantial parts of the contents of the work by producing copies of it and by making it available to the public." In most cases, "the substantial investment" will come from the University of Oslo, meaning that the University of Oslo holds the rights to such databases, catalogues, etc. Examples of databases that are a result of a substantial investment may be databases developed by the Centre for Information Technology (USIT) or the museums, databases with biological data funded by the University of Oslo, long series of measurements, records and data within natural science research, etc.
Databases may be structured in such a way that a third party may have rights to constituent elements of the content of the database. In order for the University of Oslo to be able to use the database for commercial purposes, it is important that prior to the start- up of a project, the University of Oslo secures the rights to use such elements through agreements with the employee and any external third parties.
An employee who sees commercial potential in a database and who is considering commercial exploitation of a database, or who has taken steps toward such commercialisation, must notify the University of Oslo of this through Inven2 AS. This obligation to notify the University about work associated with databases will be included in the employment contract between the University of Oslo and the employees. Under the Copyright Act, the University of Oslo has an originator’s right to the database. In cases where the University of Oslo does not wish to pursue commercial exploitation of a database, the University will consider transferring the right to do so to other parties.
2.3.4 Physical objects
Physical objects that are a result of the University of Oslo's investments, including objects that have been created or produced using the University's resources or in another way have been collected or produced through activities at the University, are the property of the University of Oslo, provided this is not or will not come into conflict with other party's rights, e.g., patients' rights associated with blood and tissue samples, etc.
An employee who is considering commercial exploitation of physical objects or has taken steps toward such commercialisation must notify the University of Oslo of this through Inven2 AS. This notification obligation for work associated with physical objects is included in the agreements between the University of Oslo and the employee.
Researchers at the University of Oslo may share research reagents (physical objects which are the property of the University of Oslo) with colleagues at other institutions according to established custom and in accordance with the principle of verifiability of research results, and with the private sector in joint ventures on the conditions stated below. Furthermore, in connection with publication in many scientific journals, the researchers will be obliged to share the reagents because the journals have a contractual practice for this for the same reason.
In accordance with the above, the University of Oslo's researchers may transfer to others physical objects which are the University of Oslo's property with the following limitations:
i) Part of the object must remain at the University of Oslo, i.e., the source is usually not emptied of all the reagent;
ii) The recipient must not transfer the reagents to a third party without the University of Oslo's approval;
iii) Physical objects are only given away for research purposes and not for commercial use;
iv) The University of Oslo's researchers must obtain a signed Material Transfer Agreement before dispatching the item.
The signed Material Transfer Agreement must be sent to the University of Oslo at the same time as the reagent is dispatched. The University of Oslo has standard agreements for the transfer of physical objects in these cases (Material Transfer Agreement, MTA), which can be used.
2.3.5 Computer programs
Section 39 of the Norwegian Copyright Act regulates the rights to computer programs: "Copyright in a computer program which is created by an employee in the execution of duties for which he is employed or in accordance with the instructions of his employer shall, subject to the limitation ensuing from Section 3, devolve on the employer, unless otherwise agreed." (Copyright Act, Section 39 g).
It can be difficult to determine whether a computer program is an invention that is patentable or a work that is copyright protected, or whether the program is both patentable and copyright protected. Patenting or patentability does not preclude copyright protection.
The basic principle is that the employer has all rights in those cases where the computer program has been created by an employee as part of the execution of a task given by the employer, unless otherwise agreed. In respect of academic employees, it is not clear in all contexts just how far this provision of the Copyright Act extends.
The notification obligation for work related to computer programs includes computer programs that are linked to an invention or other technical solution, product or method. It also includes computer programs that, in the employee's opinion, have commercial potential, as well as cases where the employee is considering the commercial exploitation of the program or has already taken steps to commercialise it.
If there is any doubt as to whether a computer program is patentable or not,